Lott & Fischer is an intellectual property law firm in Coral Gables, Florida. The firm concentrates its practice exclusively in intellectual property law, including U.S. and international patent, trademark, copyright, unfair competition, Internet, and entertainment law and related litigation.

On Mandamus, the Court of Appeals for the Federal Circuit affirmed a district court’s order holding that a client’s disclosure in correspondence to third parties that he or she has received a green light from his or her intellectual property lawyers may waive the attorney-client privilege. In Target’s suit against Williams for patent infringement, the United States District Court for the Central District of California ordered that Target produce three letters listed in its privilege log. The letters contained correspondence between two law firms hired by Target and Target’s president.

In its initial motion to compel production, Williams argued that Target waived its attorney-client privilege, which would typically shield the letters, by stating in a sales letter: “I also asked my patent attorney to conduct a search in the US patent literature, and no potential infringement was found.” A magistrate judge denied the motion to compel. However, the district court found that Target had waived its privilege and ordered the company to produce the letters.

Under the “fairness doctrine,” a privilege holder may not disclose certain portions of privileged communications and withhold other portions. Target attempted to argue that the statement concerning potential infringement did not waive the attorney-client privilege because it did not reveal a significant part of the actual attorney-client communications. Target also tried to argue that because the disclosure was not made in judicial proceedings and Target was not relying on it to establish a claim or defense, the fairness doctrine did not apply. The district court disagreed, holding that because the statement revealed the attorney’s conclusion, the attorney-client privilege did not apply.

The CAFC affirmed the district court’s decision and further clarified that when ordering production, the district court should ensure its order is properly limited to the subject matter of the disclosure. Other materials that are not the subject of the portion waived should be appropriately excluded or redacted.

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